Acquired Distinctiveness or Secondary Meaning

15 U.S.C. §1052(f)

Except as expressly excluded in subsections (a), (b),

(c), (d), (e)(3), and (e)(5) of this section, nothing herein shall prevent the

registration of a mark used by the applicant which has become distinctive of the

applicant’s goods in commerce. The Director may accept as prima facie evidence that

the mark has become distinctive, as used on or in connection with the applicant’s

goods in commerce, proof of substantially exclusive and continuous use thereof as a

mark by the applicant in commerce for the five years before the date on which the

claim of distinctiveness is made. Nothing in this section shall prevent the

registration of a mark which, when used on or in connection with the goods of the

applicant, is primarily geographically deceptively misdescriptive of them, and which

became distinctive of the applicant’s goods in commerce before the date of the

enactment of the North American Free Trade Agreement Implementation Act.

If a proposed trademark or service mark is not inherently

distinctive, it may be registered on the Principal Register only upon proof of acquired

distinctiveness, or "secondary meaning," that is, proof that it has become distinctive

as applied to the applicant’s goods or services in commerce. If the applicant

establishes, to the satisfaction of the examining attorney, that the matter in question

has acquired distinctiveness as a mark in relation to the named goods or services, then

the mark is registrable on the Principal Register under §2(f) of the Trademark Act,

15 U.S.C.  §1052(f)

.

Within the context of the Trademark Act, §2(f) may be

described as follows:

[U]nlike the first five sections of

15 U.S.C.

§1052

which define the grounds upon which a trademark

registration is to be refused, Section 2(f) serves as an exception to a rejection

under the provisions of one of the other sections, Section 2(e)

the Principal Register under §2(f) of the Trademark Act,

15 U.S.C.  §1052(f)

.

Within the context of the Trademark Act, §2(f) may be

described as follows:

[U]nlike the first five sections of

15 U.S.C.

§1052

which define the grounds upon which a trademark

registration is to be refused, Section 2(f) serves as an exception to a rejection

under the provisions of one of the other sections, Section 2(e). Section 2(f)

permits registration of marks that, despite not qualifying for registration in light

of Section 2(e), have nevertheless "become distinctive of the applicant’s goods in

commerce." Thus, "Section 2(f) is not a provision on which registration can be

refused," . . . but is a provision under which an applicant has a chance to prove

that he is entitled to a federal trademark registration which would otherwise be

refused.

Yamaha Int’l Corp. v. Hoshino Gakki Co.

, 840 F.2d 1572, 1580, 6

USPQ2d 1001, 1007 (Fed. Cir. 1988) (citation omitted) (quoting

In re Cap. Formation Couns.,

Inc.

, 219 USPQ 916, 917 n.2

(TTAB 1983)).

The purpose and significance of secondary meaning may be

described as follows:

A term which is descriptive . . . may, through usage

by one producer with reference to his product, acquire a special significance so

that to the consuming public the word has come to mean that the product is produced

by that particular manufacturer. This is what is known as secondary meaning.

The crux of the secondary meaning doctrine is that

the mark comes to identify not only the goods but the source of those goods. To

establish secondary meaning, it must be shown that the

primary

significance of the term in the minds of the consuming public is not the product but

the producer. This may be an anonymous producer, since consumers often buy goods

without knowing the personal identity or actual name of the manufacturer.

Ralston Purina Co. v. Thomas J. Lipton,

Inc.

, 341 F. Supp. 129, 133, 173 USPQ 820,

823 (S.D.N.Y. 1972) (citations

omitted)

g, it must be shown that the

primary

significance of the term in the minds of the consuming public is not the product but

the producer. This may be an anonymous producer, since consumers often buy goods

without knowing the personal identity or actual name of the manufacturer.

Ralston Purina Co. v. Thomas J. Lipton,

Inc.

, 341 F. Supp. 129, 133, 173 USPQ 820,

823 (S.D.N.Y. 1972) (citations

omitted).

Three basic types of evidence may be used to establish

acquired distinctiveness under §2(f) for a trademark or service mark:

(1)

Prior Registrations

: A claim of ownership of one or more

active prior registrations on the Principal Register of the same mark for goods

or services that are sufficiently similar to those identified in the pending

application (

37 C.F.R. §2.41(a)(1)

;

see

TMEP

§§1212.04–1212.04(e)

);

(2)

Five Years’ Use

: A verified statement that the mark has

become distinctive of the applicant’s goods or services by reason of the

applicant's substantially exclusive and continuous use of the mark in commerce

for the five years before the date on which the claim of distinctiveness is made

(

37 C.F.R. §2.41(a)(2)

;

see

TMEP

§§1212.05–1212.05(d)

); and

(3)

Other Evidence

: Other appropriate evidence of acquired

distinctiveness (

37 C.F.R.

§2.41(a)(3)

;

see

TMEP

§§1212.06–1212.06(e)(iv)

).

These three basic types of evidence apply similarly to

collective trademarks, collective service marks, and collective membership marks

(together "collective marks"), and certification marks, with slight modifications

regarding the type of evidence required due to (1) the different function and purpose of

collective and certification marks and (2) the fact that these types of marks are used

by someone other than the applicant.

See

37

C.F.R. §2.41(b)-(d)

.

ective trademarks, collective service marks, and collective membership marks

(together "collective marks"), and certification marks, with slight modifications

regarding the type of evidence required due to (1) the different function and purpose of

collective and certification marks and (2) the fact that these types of marks are used

by someone other than the applicant.

See

37

C.F.R. §2.41(b)-(d)

.

(1)

Prior Registrations

: A claim of ownership of one or more

active prior registrations on the Principal Register of the same mark for: goods

or services that are sufficiently similar to those identified in the pending

application, for a collective trademark or collective service mark

(

37 C.F.R. §2.41(b)(1)

;

cf.

TMEP §§1212.04–1212.04(e)

); goods,

services, or nature of the collective membership organization that are

sufficiently similar to those identified in the pending application, for a

collective membership mark (

37 C.F.R.

§2.41(c)(1)

;

cf.

TMEP §§1212.04–1212.04(e)

); and goods

or services that are sufficiently similar to the goods or services certified in

the pending application, for a certification mark (

37 C.F.R.

§2.41(d)(1)

);

cf.

TMEP §§1212.04–1212.04(e)

);

(2)

Five Years’ Use

: A verified statement that the mark has

become distinctive of: the members’ goods or services by reason of the members’

substantially exclusive and continuous use of the mark in commerce for the five

years before the date on which the claim of distinctiveness is made, for a

collective trademark or collective service mark (

37 C.F.R.

§2.41(b)(2)

;

TMEP

§1212.05(d)

); indicating membership in the

applicant’s collective membership organization by reason of the members’

substantially exclusive and continuous use of the mark in commerce for the five

years before the date on which the claim of distinctiveness is made, for a

collective membership organization (

37 C.F.R

r a

collective trademark or collective service mark (

37 C.F.R.

§2.41(b)(2)

;

TMEP

§1212.05(d)

); indicating membership in the

applicant’s collective membership organization by reason of the members’

substantially exclusive and continuous use of the mark in commerce for the five

years before the date on which the claim of distinctiveness is made, for a

collective membership organization (

37 C.F.R.

§2.41(c)(2)

;

TMEP

§1212.05(d)

); or the certified goods or services, by

reason of the authorized users’ substantially exclusive and continuous use of

the mark in commerce for the five years before the date on which the claim of

distinctiveness is made, for a certification mark (

37 C.F.R.

§2.41(d)(2)

;

TMEP

§1212.05(d)

); and

(3)

Other Evidence

: Other appropriate evidence of acquired

distinctiveness (

37 C.F.R.

§2.41(b)(3)

,

(c)(3)

,

(d)(3)

;

cf.

TMEP §§1212.06–1212.06(e)(iv)

).

The applicant may submit one or any combination of these

types of evidence, which are discussed in more detail below. In addition, see

TMEP §1212.01

regarding the factors

considered when determining whether a mark has acquired distinctiveness.

Depending on the nature of the mark and the facts in the

record, the examining attorney may determine that a claim of ownership of a prior

registration(s) or a claim of five years’ substantially exclusive and continuous use in

commerce is insufficient to establish a prima facie case of acquired distinctiveness. In

which case, the applicant may then submit additional other evidence of acquired

distinctiveness.

The legal principles pertaining to evidence of acquired

distinctiveness discussed in this section and below with respect to trademarks and

service marks apply generally to collective marks and certification marks as well.